Complete Property Solutions Pty Ltd.

[2011] ATMO 54

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1292776(36) - CPS PROPERTY PASSIONATELY COMMITTED & Device - in the name of Complete Property Solutions Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Applicant: Brian Shortt of Jirsch Sutherland IP

Decision:

Ex parte Decision, s44 objection raised by examiner maintained. S44(3)(a) argued but inapplicable on the evidence.

Trade mark refused registration.

2011 ATMO 54

Background

1. In this matter Complete Property Solutions Pty Ltd (‘the applicant’) has applied to register a trade mark, the current details of which are:

Application No: 1292776

Priority Date:  2 April 2009 (‘the priority date’)

Services:Class 36: Agency services for the leasing of real estate property; agency services for the selling on commission of real property; leasing of property; management of property; property leasing (real estate property only); property portfolio management; real property letting; real property management; rental of property (‘the services’)

Trade Mark:               

(‘the trade mark’)

1. An Examiner raised grounds for rejection of the trade mark under section 31 of the Trade Marks Act 1995 (‘the Act’). In particular, the Examiner identified the following three earlier filed trade marks as citations under section 44 of the Act:

Regn.	Trade Mark	Services	Owner	Priority Date
994313	Class: 36 Financial services including banking, financing and lending services; investment consultancy services including financial planning services; insurance services including general and health insurance planning services; real estate services included within this class	Community CPS Australia Ltd	3.      4.    22 March 2004
1054810	Class: 36 Real estate affairs	Jeffrey Huggins	10 May 2005
1093443	Class: 36 Financial services including banking, financing and lending services; investment consultancy services including financial planning services; insurance services including general and health insurance planning services; real estate services included within this class	Community CPS Australia Ltd	5 January 2006

(‘the cited trade marks’). 

1. The applicant requested to be heard.  As a delegate of the Registrar of Trade Marks, I heard submissions made on behalf of the applicant by Brian Shortt, Solicitor, of Jirsch Sutherland IP at a hearing in Sydney on 18 February, 2011. 

Evidence

1. The evidence comprises the statutory declaration of Jacob O’Neill with Exhibits JAO-1 to JAO-31 dated 27 September 2010 and the later declaration of Jacob O’Neil (sic) dated 15 February, 2011 (together, ‘the O’Neill declarations’).

Submissions and Discussion

1. This matter has arisen for me to decide as a delegate of the Registrar of Trade Marks because of the stated grounds for rejection in terms of section 44 of the Act and because of the provisions of section 33 of the Act which allows:

   33Application accepted or rejected

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it.

   Note:For this Act see section 6.

   (2)The Registrar may accept the application subject to conditions or limitations.

   Note:For limitations see section 6.

   (3)If the Registrar is satisfied that:

   (a)the application has not been made in accordance with this Act; or

   (b)there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   Note:For this Act see section 6.

   (4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

   Note:For applicant see section 6.

2. Relevantly, section 44 states that:

   44Identical etc. trade marks    

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (3)If the Registrar in either case is satisfied:

   (a)that there has been honest concurrent use of the 2 trade marks; or

   (b)that, because of other circumstances, it is proper to do so;

   the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.

   Note:For limitations see section 6.

3. I consider that the Examiner was right to raise the cited trade marks against the application under section 44(2). Each of the cited trade marks has an earlier priority date to that of the application. The services of the application, namely, “agency services for the leasing of real estate property; agency services for the selling on commission of real property; leasing of property; management of property; property leasing (real estate property only); property portfolio management; real property letting; real property management; rental of property”, are, as the Examiner rightly decided in my opinion, similar services to the “real estate services” of registrations 994313 and 1093443 and the “real estate affairs” of registration 1054810 within the meaning of section 14(2) of the Act. Furthermore, the commonality of the same combination of letters “CPS” (being arbitrary in relation to class 36 services) and their prominence in each of the cited trade marks renders the application deceptively similar to those marks.

4. The applicant nonetheless appealed to the Examiner to accept the application under section 44(3)(a) of the Act (on the basis of ‘honest concurrent use’). The Examiner determined that in this instance the provision did not apply. The key issue for me to determine is whether, in light of the evidence, the application should be accepted for registration on this basis.

5. The criteria relevant to establishing honest concurrent use are derived from the decision in John Fitton & Co Ltd's Application (1949) 66 RPC 110 and are set out below:

• the honesty of the concurrent use;

• the duration, area and volume of the use;

• the degree of confusion likely to result from the concurrent use;

• whether any instances of confusion have in fact occurred;

• the relative inconvenience which would be caused to the parties.

1. The noteworthy information in the O’Neill declarations can be summarised as follows:

v  the applicant was not aware of the cited trade marks when it adopted the trade mark

v  the applicant adopted the trade mark, in its words, “on the basis that the CPS element is an acronym of its name Complete Property Solutions”

v  the trade mark has been used by the applicant “in substantially the same form since its first use in November 2008”.

1. On my appraisal of the evidence, I accept that the applicant adopted the trade mark honestly in the sense that it was unaware of the cited trade marks at the priority date.  The letters “CPS” are the initial letters of the applicant company name and the evidence shows that the applicant engaged a design agency to devise the logo element of the trade mark.  Additionally, the trade mark is one of a number of trade marks filed by the applicant which include the letters CPS, the same “impeller” device and the slogan PASSIONATELY COMMITTED[1].

   [1] See trade mark applications 1306962 and 1306964 (both lapsed) and subsequent filings for those same trade marks under applications 1389010 and 1395934.

2. I accept the veracity of the applicant’s representations that there has been no confusion between the trade mark and the cited trade marks.  I accept, too, that over the total period during which the trade mark has been used there is broad support for its use across the breadth of the services.  

3. On the other hand, there is a mere six months’ use of the trade mark before the priority date. The evidence is that the trade mark has been used continuously since November 2008 and so, at the time of the hearing, there has been use for little more than two years in total.

4. The applicant submitted that I should take full account of the use of the trade mark after the priority date and referred in support to Shanahan’s Australian Law of Trade Marks and Passing Off (4^th Edition) at [40.2010]:

   The fate of the application is to be judged as at the date of application. Hence the applicant’s use must have commenced prior to the lodgement of the application. However, what has happened after the lodgement of the application may be considered in the exercise of the discretion under section 44(3).

5. That discretion was exercised by Carr J in PB Foods  Ltd v Malanda Dairy Foods Ltd (1999) 47 IPR 47; (1999) AIPC 91-531; [1999] FCA 1602 where, referring to the near equivalent provision in the now repealed Trade Marks Act 1955, his Honour stated at 71:

   section 34(1) can, in my opinion, reasonably be viewed as in the nature of a type of exception to the normal registration process. There is a discretion to be exercised and, although there does not appear to be any authority directly in point, it seems to me that, to some extent, matters occurring after the application date may be taken into consideration in the exercise of that discretion.”

6. The evidence shows use of the trade mark on a range of stationery items, information and planning guides, and signage.  The trade mark is also used on a periodic newsletter, on electronic Christmas cards and on other promotional material.  However, in my estimation, use or dissemination of much of that material is not of itself immediately indicative of widespread public awareness of the trade mark – I would characterise much of this material as ephemera or business paraphernalia.

7. What I am looking for is a demonstration of real commercial value and goodwill in the trade mark.  Confidential Exhibit JAO-15 details revenue generated from the provision of services under the trade mark.  Confidential Exhibit JAO-26 gives the amounts spent advertising and promoting the trade mark. 

8. Respecting that confidentiality, it would not be inaccurate to describe the revenue figures as very unremarkable.  I note, for example, that the entire 2009 revenue only exceeds the 2008 revenue by a little over $6,000.  Not only are the figures low but they are unconnected with any data which might translate into numbers of properties sold, leased or managed such that a relationship could be understood between the revenue and the activities which generated that revenue.  The advertising spend is equally unimpressive. 

9. In short, even taking account of usage after the filing date, the accumulated evidence of use is so low and of such relatively short duration that this one factor alone weighs heavily against allowance of the application.  Added to that limitation is the finding which I have already made that the trade mark is very clearly deceptively similar to the cited trade marks and the, not unreasonable, deduction that the low usage of the trade mark is at least one factor which must have mitigated against actual confusion to date.  Hence there emerges a cluster of facts which is sufficient to see the end of the honest concurrent use argument.  I am not obliged to consider every factor outlined in John Fitton & Co Ltd's Application and I decline to make any detailed evaluation of the question as to how the applicant might be inconvenienced by refusal of the application.  Suffice it to say that in this instance a search of the Register prior to filing the application would have been a prudent step on the part of the applicant.

Decision

1. Under section 33, I reject application 129776 for the reasons given.

Debrett Lyons

Hearing Officer

Trade Marks Hearings

27 June 2011